TMI Associates

WTR Research

The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal trademark expertise.

Gold - Firms: enforcement and litigation

Gold - Firms: prosecution and strategy

Home to “a like-minded team of attorneys that offers reliable and consistent trademark assistance”, TMI Associates excels in all things intellectual property. The full-service outfit “offers very good solutions for trademark issues in Asia” through its excellent service and “careful, thoughtful analysis of complex issues”. “Very professional in all aspects of intellectual property, the firm has left a deep impression on us for communicating in a time and cost-efficient way.” With advice that is easy to understand, “not only are they diligent in their work, responsive and reliable, their legal knowledge is sound and their work meticulous”. “The team is cooperative and collaborative as well, which makes for a very pleasant working experience.” Shunji Sato is the go-to attorney for trademarks in Japan. “In addition to being responsive and providing clear advice, his billing rates correlate with the complexity of the work.” “An expert on Japanese IP law and practices, Shunji does not compromise on legal accuracy. He has an international mindset too, while providing commercially sound advice. He is very approachable as well.” With more than three decades of IP experience under her belt, Mitsuko (Mimi) Miyagawa recently received government recognition for her notable achievements in, and contributions to, the IP space. A brand protection specialist, she is currently a member of the Customs Dissatisfaction Review Committee. Japan-qualified patent and trademark attorney Takeshi Hironaka works closely with Miyagawa to serve global brands in a host of trademark matters ranging from prosecution to enforcement. Armed with “exemplary legal ability”, luminary Yoshiyuki Inaba’s grasp of English and Japanese make communication simple. “He is an excellent lawyer, very professional and familiar with local IP laws and regulations.” Inaba also acts as a mentor for younger lawyers who benefit from his counsel. “When the occasion arises, I know that I can count on Yoshi and his colleagues to give excellent advice.”

Recommended - Firms

A leading Japanese and international firm, TMI makes the most of its 80-plus IP lawyers, 85-plus patent and trademark attorneys and large support staff to provide a fulsome service for brand-rich companies. With a base in Yangon for just over eight years, it fields a local team that works collaboratively with colleagues in Tokyo to satisfy the needs of Japanese and other companies when it comes to trademark protection, enforcement and licensing matters. Taking charge in the region is Aung Htin Kyaw, whose up-to-date knowledge and guaranteed conscientiousness ensure a seamless service.

Firm Profile

TMI Associates is one of the top five domestic law firms in Japan, comprising 485 lawyers (bengoshi) and 86 patent/trademark attorneys (benrishi) as of September 2020. TMI provides clients with a wide range of superior-level legal services – not only in intellectual property, but also in corporate, finance, bankruptcy and litigation matters. Since the formation of TMI in 1990, one of the firm’s strongest and most esteemed areas of practice has been IP law. TMI’s IP group consists of 73 IP lawyers, 86 patent/trademark attorneys and 95 support staff.

Collaboration

Thanks to its experienced IP lawyers and patent/trademark attorneys working together as a team, TMI offers its clients high-quality IP services that are unlike those of any other international law firm in Japan.

Full-service provider

TMI provides clients with the full gamut of services for the protection of IP rights, from filing patent, design and trademark registrations, to enforcing IP rights through litigation or negotiations.

Ability to resolve IP disputes

Our strong litigation team is made up of highly experienced IP litigation lawyers and patent/trademark attorneys with a track record of successful cases, including in infringement litigation and invalidation proceedings against decisions of the Japan Patent Office. In order to strengthen its litigation practice, TMI has also recruited lawyers who were previously high-profile judges, including former Supreme Court judges and a former presiding judge of an IP high court division.

High-quality services in related areas

  • Anti-counterfeiting projects involving civil, criminal and customs procedures to prevent importation of counterfeit products
  • Copyright
  • Entertainment and sports law
  • Protection of know-how and trade secrets
  • Prevention against unfair competition
  • Contract drafting
  • Resolution of disputes arising from IP licensing agreements
  • IP due diligence upon acquisition, merger or listing on stock exchange
  • Financing collateralised with IP rights

International experience

TMI has worked for both domestic and foreign clients from around the world. English-speaking lawyers, patent/trademark attorneys and support staff serve foreign clients. Further, TMI’s Chinese, French and Indian practice groups serve Chinese, French and Indian clients with seamless communication in their native language.

Overseas offices and global network

In response to the globalisation of clients’ businesses, TMI has opened offices in Shanghai, Beijing, Yangon, Singapore, Ho Chi Minh City, Hanoi, Phnom Penh, Bangkok, Silicon Valley and London. TMI also collaborates with 200 major law firms in 160 countries, thus forming a global network of equal partnerships that enables TMI to respond to its clients’ international needs.

Notable cases

TMI is known for its worldwide brand portfolio management for high-profile luxury brands. TMI has extensive experience of working with clients to develop an effective anti-counterfeiting strategy tailored to their needs and budgets. This includes civil, criminal and customs procedures. TMI has worked closely with customs officials to stop the import of counterfeit products. TMI has an excellent track record of successfully resolving disputes relating to trademark and other IP rights.

Work areas

TMI’s client base is diverse, ranging from large listed companies to venture companies. TMI represents companies across all business sectors, including information technology, biotechnology, industrial machinery, automobiles, pharmaceuticals and consumer products, as well as media, entertainment and sports businesses. TMI is also recognised for its trademark services for world-famous luxury brands in the apparel, liquor, cosmetics and fashion industries, based on its rich experience in these sectors.

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